Chambers Intellectual Property Overview (Malaysia)
Authors : Bahari Yeow Tien Hong, Lim Zhi Jian, Alex Choo Wen Chun
Firm : Gan Partnership, Malaysia
There are 5 predominant areas of Intellectual Property (IP) namely trademark, copyright, patent, industrial design and geographical indication. An extension of IP would also encompass matters related to confidential information, trade secrets and know-how.
A trademark is any sign, brand, logo or label affixed onto goods that may distinguish one’s goods from another. The Malaysian trademark regime saw a tectonic shift in 2019 when the new Trademarks Act 2019 (“TMA 2019”) came into force on 27 December 2019, repealing the Trade Marks Act 1976 (“TMA 1976”). The Malaysian trademark statute now contains 183 provisions (from only 84 provisions under the TMA 1976). The significant changes are, among others:
(1) the recognition of non-conventional trademarks (e.g. shape of goods or their packaging, colour, sound, scent, hologram, positioning and sequence of motion);
(2) enhancement of remedies available to brand owners who fall victim to trademark infringement (brand owners may now seek for damages and account of profits against the wrongdoer in certain circumstances);
(3) incorporation of the Madrid Protocol into our domestic legislation (this will allow a Malaysian trademark owner to potentially obtain trademark protection in 116 countries in one streamlined international application); and
(4) allow for trademark owners to collateralize their trademark.
Copyright is the protection accorded to works reduced to material form. This typically takes the form of literary works, musical works, artistic works, photographs, films or sound recordings and broadcasts.
Patent protects novel inventions which may come in the form of a product or a process. There are 3 requirements for a product or a process to be patentable, namely it has to be new, involves an inventive step and is industrially applicable. The Malaysian Patent Act 1983 also provides for utility innovations (also known as minor or petty patents). The requirement of a utility innovation is merely that it is new and industrially applicable (without the need of an inventive step). Much like patents, an owner of a granted utility innovation shall have exclusive rights to exploit said utility innovation for a total duration of 20 years.
Industrial design confers protection on features of shape, configuration, pattern or ornament which are judged solely by the eye. An industrial design must be new in order to be registered. Copyright and industrial design protection are mutually exclusive - copyright cannot be simultaneously protected as an industrial design.
Geographical indication means an indication which identifies any goods as originating in a country or territory where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin. Registration may be applied for by a person carrying on an activity as a producer in the geographical area, a competent authority or a trade organization or association. An example of a Malaysian geographical indication is Sabah Tea.
At the cusp of the 5th industrial revolution and with Malaysia ushering in the 12th Malaysia Plan, ICT will continue to thrive. We are barely scratching the surface with digitization and artificial intelligence.
As Malaysia (and the world) continues to combat COVID-19, 2021 promises to be a better year as stakeholders are slowly but surely getting accustomed to the new normal.
Being the ultimate tipping point for the 21st century, the pandemic forced a reality check for Malaysians to embrace progress, globalization, and digital transformation. IP prosecution is made available online mostly. Almost completely digitized processes are facilitating both filing and examinations alike.
To stay afloat and relevant, businesses have focused on embracing communications technologies. The legal industry is no exception. Both the Bar and the Bench are embracing remote communication avenues to conduct proceedings. The law was changed to allow Zoom/Skype trials. This can be observed in the Intellectual Property Courts, which have not suspended proceedings amidst these trying times.
Unfortunately, modern communication technology has made it so much easier for infringers.
Nevertheless, the Malaysian IP fraternity is ready to meet these challenges. IP law does not rest upon a Procrustean bed and will face new conditions with dynamism.